Impact of the United States-Mexico-Canada Agreement on intellectual property rights

October 29th, 2018

By Pascal Lauzon, partner, and Sarah Hébert-Tremblay, lawyer

Earlier this month, Canada, the United States and Mexico signed an agreement referred to as the United States-Mexico-Canada Agreement (the "USMCA"), which will succeed the North American Free Trade Agreement ("NAFTA"). Although the agreement is not final, we can anticipate some major changes in the Canadian intellectual property rights landscape, including the following:

1. Extension of the term of copyright

The Copyright Act currently provides that copyright subsists for the life of the author and until the end of the 50th year following the author’s death. Under the USMCA, that term is to be increased to 70 years following the author’s death. This will align Canadian law on this matter with the provisions in effect in the European Union and the United States.

2. Statutory damages for trademark infringement

Canadian law provides for statutory damages for copyright infringement, but not for the infringement of trademarks. The USMCA would therefore call for including provisions for pre established damages in the Trademarks Act. However, statutory damages will be applied in counterfeiting cases; that is, they will not necessarily apply to all trademark infringement cases.

3. Patent term adjustment

At present, Canadian law does not offer an adjustment of the term of a patent, as the United States does, for example, to compensate for delays in issuing a patent that are attributable to the Patent Office. The legislation should therefore be amended so that patent terms can be adjusted when a patent has been issued either five years after the application has been filed or three years after examination is requested. The objective is to minimize the consequences of what may be unreasonable delays in processing applications.

4. Extension of the protection term for new biologic drugs

While Canada offers a data protection and market exclusivity term of eight years for new drugs, that period will have to be extended to ten years for biologics under the USMCA.

Other substantial amendments are also expected. For example, regarding trademarks and copyrights, border services would be given greater powers in relation to the inspection, detention and destruction of products that may be counterfeit or pirated. These changes should clearly please intellectual property owners. However, we will have to wait until the USMCA is officially ratified and implemented before we can properly assess its impact.

If you have questions about how these anticipated changes could affect your business, please do not hesitate to contact our intellectual property law specialists.